from the because-intellectual-property dept

In the world of pop starlets, apparently Taylor Swift and Katie Perry hate each other. And, now, it appears that both of them are trying to one-up each other in having their lawyers issue legal threats to fans for no good reason. We've already written about Katy Perry's lawyers' threatening letter over a 3D-printable plan for "the left shark" from her Super Bowl routine (an argument that is legally dubious).

We originally made the item for fun, we love Taylor and we had friends that love Taylor. We never intended for it to be a profit making item. The cost of the item covered shipping costs, and production costs with very little left over.

When we got the e-mail that the trademark infringement occurred, we were pretty shocked because while our item was popular we didn’t feel as if it had become popular enough to cause harm to Taylor Swift’s empire. We were shocked. And we were scared. We didn’t even make enough money for a lawyer and this had seemed like such a harmless and fun idea.

The Buzzfeed article also notes that it appears that Swift has hired MarkMonitor, the big player in sending takedown threat letters over copyright and trademark issues, to send such takedown letters.

Depending on the specific products, there may be some legitimate trademark or copyright claims here, but it's hard to see how any of these actually create any real benefit for Swift, other than pissing off her fans, and angering people who actually wanted to celebrate their fandom of Swift and her music. Yes, these days popstars like Swift are "big businesses" who want to capture every possible penny that they can get from fans, but these kinds of products aren't doing any real damage to Swift or her brand. The takedowns, however, might be the opposite -- creating a real distaste among some fans for daring to try to display their fandom in a unique and creative way.

Understandably, Lazy Man is baffled by Nutribullet's quasi-C&D letter. Here's the letter in its entirety. (Screenshot of original email here.)

Dear Domain Administrator,

Nubribullet, LLC is the owner of the well-known trademark and trade name Nutribullet. As you are no doubt aware, Nutribullet is a trademark used to identify products, services, activities and events related to Nutribullet, LLC.

The trademarks, emblems, words and phrases of Nubribullet, LLC are exclusively used by Nutribullet, LLC and any other use by a third party constitutes trademark infringement.

In connection to Nutribullet, LLC proprietary rights over its famous trademark we are notifying you of the following:

It has come to our attention that our trademark Nutribullet appears as a metatag, keyword, visible or hidden text on the web site(s) located at:

without having obtained prior written authorization from our Client. This practice infringes upon the exclusive intellectual property rights of Nutribullet, LLC.

Also, by using such trademark, you have intentionally attempted to attract Internet users to your web site(s) or other online location(s), by creating a likelihood of confusion with the Nutribullet, LLC trademark as to the source, sponsorship, affiliation, or endorsement of your web site(s), online location(s), products or services.

We trust that you will remove all metatags, keywords, visible or hidden texts including trademark presently appearing on the above-cited web site(s) and any other web site(s), or draw this issue to the attention of the appropriate person(s).

As part of our Nutribullet, LLC Trademark Enforcement Program, be assured that we will continue to monitor your web site(s) to verify your compliance with this letter. Failure to do so will force us to defer this issue to our Trademark Lawyer for further actions.

Should you require additional information or wish to further discuss this issue, please do not hesitate to contact the undersigned.

Sincerely, Nutribullet, LLC

As Lazy Man points out, not only was the review positive but he linked to places where the product could be purchased. Normally, this sort of clumsy trademark C&D is deployed by unhappy companies seeking to bury criticism. He contrasts Nutribullet's reaction to other companies whose products have received good reviews from his site.

When I wrote a similar article about SodaStream, including the trademark in the keywords, the employees of the company printed it out and shared it through the office. When I wrote about True Orange the company emailed me to thank me and asked if they could me send me free product. These companies get it. When you get good, free promotion, enjoy it and, if you want to be polite, thank the person for the help.

Beyond the nonsense about "metatags" and "keywords" (more on that in a bit), there's the ridiculous assertions and stipulations made and requested by Nutribullet's "Trademark Enforcement" team.

First, the claim that Lazy Man "intentionally" used Nutribullet's trademark to attract users to his site (everything posted at nearly any website is designed to "attract users") is standard IP bully myopia. To tiny minds like these, the entire internet is out to profit on its hard work and, therefore, bloggers like Lazy Man must be stopped before they bankrupt Nutribullet by using its name in a review of its product.

It takes the crazy train further off the rails by insisting Lazy Man is only doing this to create confusion in potential customers' minds. By using the name of the company in a review of the company's product, Lazy Man is somehow implying that he is Nutribullet or an approved spokesman. (This somehow adds up to Nutribullet losing business from a positive review, but you have to use Trademark Math to arrive at this conclusion.)

Neither of those claims stand up to any scrutiny at all. Skipping past these ridiculous claims, one stumbles across the absurd demands of Nutribullet.

We trust that you will remove all metatags, keywords, visible or hidden texts including trademark presently appearing on the above-cited web site(s) and any other web site(s)...

Worded this way, it appears Nutribullet wants Lazy Man to police the internet itself to keep it Nutribullet-free. This lends more credence to the assumption that Nutribullet's legal "team" has no idea what the hell it's doing. (Confirmation appears further down in the post...)

There is no chance that someone would be mislead into thinking my site is the official NutriBullet website. That covers the "source" part of their complaint. As for "sponsorship, affiliation, or endorsement" I don't see using a meta-keyword would convey that impression to users. I have yet to come across the Internet user who looks at meta keywords to determine if there is an affiliation. If such an Internet user did exist I could see how they'd be confused, because that simply isn't what meta keywords are for.

Not so fast, Nutribullet would likely exclaim. What about search engines?

Also there's legal precedent: "the judge ruled that since the keyword META tags do not influence search results, having trademarked terms in them are immaterial." So we can throw that out as a reasonable explanation for the letter... unless NutriBullet is unaware of the case law.

It seems very likely Nutribullet is unaware of this precedent, as well as generally being unaware of the proper response to complimentary reviews. Granted, this isn't Nutribullet itself speaking, but it is its legal representation. Not keeping a close eye on those supposedly watching out for your best interests often results in exactly this sort of PR fiasco.

The legal team, by the way, is none other than MarkMonitor. [Screenshot of email shows originating address is "brandprotection@mm-capitalbrands" -- the registrar of that domain being MarkMonitor.] Nutribullet's hired gun is apparently unable to distinguish between helping and hurting its employer, much as it has been unable to distinguish between infringing URLs and HBO's official content when sending DMCA notices.

As the news of this letter spreads around, it won't be MarkMonitor who ends up looking bad. Nutribullet itself will be the company losing out -- the one remembered as the entity that greets good reviews with legal threats. Nutribullet may think it's receiving IP protection, but all it really seems to have acquired is a sloppy contractor who can damage Nutribullet's reputation more effectively than it can protect its IP.

from the IP:-it's-all-so-much-peanut-butter-and-chocolate,-apparently dept

We've seen the DMCA takedown process abused to stifle criticism or remove unflattering content from the web. Knowing that, the first reaction to reading about a website being forced to remove a product review after being hit by a DMCA notice is to assume some overzealous representative of the affected company is simply using copyright's powers for evil.

We are providing you this letter of notification pursuant to the Digital Millennium Copyright Act 17 USC??512(c) to make Softlayer.com aware of material on its network or system that infringes the exclusive copyrights of Woodman Labs, Inc d/b/a GoPro (“Company”). We hereby affirm that the undersigned is authorized to act on behalf of Company whose exclusive intellectual property rights we believe to be infringed as described herein.

Barring the extraneous question marks, this all looks perfectly normal. But the next paragraph reroutes the entire DMCA.

We have a good faith belief that the Internet site found at digitalrev.com infringes the rights of the Company by using the following trademarks of the Company:

At this point, the notice's issuer, Patrick Hayes (Brand Manager for Woodman Labs), is in uncharted territory. The Digital Millennium Copyright Act notice is for copyright violations only, as can readily be determined by name of the notice itself. Hayes reasserts his trademark violation claim a few paragraphs later, along with a sentence that briefly raises copyright again before returning to the misguided effort at hand.

As you may know, if this information is not removed after notice that complies with the DMCA, the Internet Service Provider may also be held liable for the copyright infringement.

I have a good faith belief that use of the trademark(s) described above in connection with the domain and URLs described above is not authorized by the trademark owner, and such use is not otherwise permissible under applicable law.

I represent that the information in this notification is true and correct and that I am authorized to act on behalf of the trademark owner.

Hayes really shouldn't be "representing" that any of this bizarre IP melange is "true and correct." Most of it isn't, starting with using a copyright-only takedown form to shutter a review over alleged trademark infringement. Then there's this: the trademarks mentioned are character marks for the name of the product itself -- "GoPro Hero" -- suggesting that DigitalRev is not allowed to use the name of the product when reviewing the product. This is not how trademark law works. At all.

Hang on, though. It gets a bit weirder from there.

As I mentioned earlier, the first reaction is that GoPro doesn't like DigitalRev's review and wants it removed before many more people can read it. (That was DigitalRev's first instinct as well, as detailed in its follow-up post on the subject.) Fortunately, DigitalRev screencapped the relevant part of the review.

There's nothing in that review that looks like it should trouble GoPro enough to overreact in this fashion. In fact, commenters on the site point out that DigitalRev's reviews of GoPro products usually range from "positive" to "overenthusiastic." So, if the review isn't the issue, what is?

Thankfully, another rep from GoPro responded quickly to clear up the confusion... by adding more confusion. The official statement, left at both Reddit and PetaPixel reads as follows:

Thanks for the heads up on this issue. The letter that was posted next to the review on DigitalRev was not sent in response to the review. Obviously, we welcome editorial reviews of our products. This letter was sent because DigitalRev is not an authorized reseller of GoPro products and they were using images and had incorrect branding and representation of our product in their online commerce store. As part of our program – we ask merchants who are selling our product to use authorized images. That is why DigitalRev was contacted. But – our letter did not clearly communicate this and that is something we will correct.

There are a few problems with this, but first and foremost is the fact that the URL specified in the takedown notice is the review's URL. Nothing involving DigitalRev's online store was mentioned in the letter and no offending URLs listed. Not only that, but this rep claims to have spotted offending 'images,' something the mentioned trademarks don't cover. A comment left at PetaPixel by GoPro's social media rep adds this to the conversation:

There are a few things that are muddling this situation at the moment. The notice was sent to digitalrev.com not because of the review, but because digitalreview.com is not an authorized reseller and are using our trademark and product images inappropriately. The notice is in regards to the sidebar, not the review itself, but we can see why it seemed like it as the url links to both.

We would never attempt to restrict anyone's freedom to share their opinion about us or our products, positive or negative.

Even if this rep is correct and Woodman Labs meant to target improper use of its trademarks, it missed with both the delivery system and the URL specified. A DMCA notice can't stop trademark infringement. Furthermore, while a hosting company can be held liable for contributory trademark infringement, it's usually a result of the host mishandling takedown notices (and some conflation of copyright and trademark by the presiding judge), rather than a foregone conclusion. Then again, if you want to hold a service provider liable for this sort of infringement, it helps to use the standard process -- directly contacting the site owner and asking him or her to remove the infringing items. Using a DMCA notice for alleged trademark infringement is just plain wrong, although various GoPro reps' insistence that the trademark infringement includes "images" most likely explains the existence of this half-copyright, half-trademark aberration.

GoPro does not authorize any of its resellers (or anyone else) to use “GoPro” or “HERO” in domain names. Your registration of goprodivemaster.com is unfortunately in direct violation of this policy. We understand that your intention is simply to sell and promote our products, but GoPro cannot risk misleading customers into believing that they are interacting directly with GoPro when they are engaging with your website or your organization. The use of our trademark terms in your business name may cause confusion, and is prohibited under international trademark law.

Even if the domain redirects to another site, this is not a permissible use of our brand terms.

Please understand: GoPro has spent years building its brand name—only the company itself is legally represented as “GoPro” or the manufacturer of the “HERO” line of cameras. We need you to kindly discontinue the use of our registered/trademarked name as soon as possible.

The author points out that his parked domain had nothing to do with GoPro or its cameras. He also points out that this issue will certainly surface again, considering the Professional Association of Underwater Instructors uses the term quite often in relation to its instructor development centers. Additionally, he did a little detective work and checked out the WHOIS information on the email address and found the domain was associated with MarkMonitor. So, it appears GoPro is outsourcing its IP protection to a company that seems to take a pray-and-spray approach to takedown notices.

Quite possibly it takes little more than having the word "gopro" appear in a URL (like the review above) to summon the bot-fury of MarkMonitor and Patrick Hayes, "Brand Manager." This explains the bizarre trademark claims and the incomprehensible takedown of a positive review. If this is indeed the case, GoPro is probably considering taking the job back in-house, seeing as its reputation is being damaged further with each retelling of this unfortunate saga.

from the this-is-going-to-be-a-disaster dept

Reader David Sutherland emailed us this week about a DMCA notice that he received via his MediaFire account. The notice, which we've included below (including all of the crappy formatting) claimed that he was using MediaFire to host "one of the following files: Downton Abbey, CONTRABAND (2012), GRIMM (2011), House M.D., MAN WITH THE IRON FISTS, THE, The Office." The "file" they claimed was one of those TV shows/movies was "Cantha Cartography Made Easy 2009.tpf" which is actually a game mod for Guild Wars. You might possibly be able to argue that ArenaNet, makers of Guild Wars could have a copyright claim (maybe, sorta), but that's not who sent the notice and it's not what they claimed it was. Sutherland notes that he set up this MediaFire account solely to host game mods and has never hosted any other content there.

So, who sent the DMCA takedown? Dtecnet. And, as you can see from the messy, messy DMCA notice below, they tried to takedown a huge list of files. If Sutherland's experience is anything to go by, you have to wonder how many of them are actually infringing.

Of course, we've seen plenty of bogus DMCA takedowns. It happens all the time. But this one is doubly important, because it's from DtecNet, a division of MarkMonitor. MarkMonitor/Dtecnet also just happen to be the company providing the key monitoring for the new "six strikes" Copyright Alert System (CAS). The Center for Copyright Information has a web page on its site about an "independent expert assessment" of MarkMonitor's antipiracy methodologies. Except... that page is completely blank. Perhaps, if they're looking to do an analysis, figuring out why they're taking down content that has nothing to do with what they claim would be a good place to start.

Good thing the CAS works entirely based on accusations, without needing to show any proof at all, huh?

from the and-why-does-this-keep-happening dept

We've seen plenty of ridiculous stories about bogus DMCA takedowns, but none get so ridiculous as the ones in which the content being demanded taken down is the officially released content. This often happens because of shoddy / clueless middlemen, as is the case with the latest example being passed around. HBO hired DtecNet / MarkMonitor to keep infringing copies of its works offline, and as TorrentFreak notes, the company sought to achieve this by sending a DMCA takedown notice to Google that demanded the removal of links to HBO's own website (as well as links to legitimate sites that included reviews of the show in question, Eastbound and Down).

Again, this kind of thing seems to happen all the time, once again confirming the key point that despite all the talk by maximalists that Google should just "know" when a work is infringing, copyright holders' own representatives have absolutely no clue at all, and that should weigh against the idea that Google or any other third party might magically know.

My real question, though, is just how much is HBO paying DtecNet / MarkMonitor for this "service"? Not only is it making a complete mockery of HBO itself, but potentially killing search engine optimization value that HBO might have towards its legit and authorized content.

Also, isn't it comforting that DtecNet / MarkMonitor are going to be the ones responsible for going after people under the new six strikes program? Stories like this really add confidence to the idea that they're going to make a complete mess of the whole thing.